Accelerated processing

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Chapter 1. Main tool for speeding up the process: PACE

Section 1.1. Legal basis

The PACE program (or & #8220;Program for Accelerated Prosecution of European Patent Applications& #8220;) is provided by & #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93.

Section 1.2. Form

It is possible to request accelerated processing of its request (for the extended search report or the first notification as soon as possible) by simple written request (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 1) using form 1005 from EPO #8217;

Section 1.3. Secret

PACE requests are not published and only #8217; they are excluded from public inspection (& #8220;Decision of the President of the European Patent Office dated 12 July 2007 concerning parts excluded from public inspection” , OG 2007, Special Edition No. 3, J.3, A1 (1) c) and & #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 3).

Section 1.4. Limitation of the number of requests

If a requester presents almost all of their requests with a PACE request, they may be asked to limit their requests and choose the ones that & #8217; they really want to prioritize (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 6).

In addition, this program is constrained by the workload of the EPO (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 6).

Certain technical fields may be subject to restrictions in case of & #8217; too many requests (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 6).

Chapter 2. Patent Prosecution Highway (or PPH)

Under the & #8220; Patent Prosecution Highway & #8221; (or PPH), it is possible to obtain an accelerated PACE type examination (point D) if (& #8220;Patent Prosecution Highway pilot program between IP5 offices on the basis of PCT and national work products” , OY 2016, A106):

  • at least one claim is considered patentable (point B.2) for:
    • a demand US ;
    • a demand JP ;
    • a demand KR ;
    • a demand CN ;
    • a demand PCT (l & #8217; ISA or l & #8217; IPEA being US / JP / KR / CN);
  • all the claims of the EP application must be identical / close to this request (identical or similar scope, point B.3);
  • the demand EP must have the same effective date as this request (point B.1), for example:
    • it claims the priority of this request;
    • it is the priority demand for this request 
    • it has a common priority document with this application;
    • it results from the same international PCT application as this application (l & #8217; ISA or l & #8217; IPEA being US / JP / KR / CN);
  • the EP examination must not have started (point B.4).

Similarly, some agreements have been concluded with national offices. It is possible to obtain an accelerated PACE type examination if at least one claim is considered patentable for:

  • a demand IT (or PCT for which l & #8217; ISA or l & #8217; IPEA being IT, “Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Canadian Intellectual Property Office on the basis of products resulting from PCT work and national work” , OY 2017, A107);
  • a demand HE (Israel) (or PCT for which l & #8217; ISA or l & #8217; IPEA being HE, “Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Israeli Patent Office on the basis of products resulting from PCT work and national work” , OY 2017, A108);
  • a demand MX (or PCT for which l & #8217; ISA or l & #8217; IPEA being MX, “Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Mexican Institute of Industrial Property, based on products resulting from PCT work and national work” , OY 2017, A109);
  • a demand TO (Australia) (& #8220;Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Australian Patent Office on the basis of products resulting from PCT work and national work“, OJ 2016, A54) ;
  • a demand SG (Singapore) (& #8220;Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Singapore Intellectual Property Office based on products resulting from PCT work and national work“, OY 2017, A110) ;
  • a demand CO (Colombia) (& #8220;Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Superintendency of Industry and Commerce of Colombia on the basis of products resulting from PCT work and national work“, OJ 2016, A75);
  • a demand UK (Russia) (& #8220;Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Federal Service of Intellectual Property on the basis of products resulting from work under the PCT and from national work“, OJ 2017, A5) ;
  • a demand MY (Malaysia) (& #8220;Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Malaysian Intellectual Property Office based on products resulting from PCT work and national work“, OY 2017, A46);
  • a demand PH (Philippines) (& #8220;Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Intellectual Property Office of the Philippines on the basis of products resulting from PCT work and national work“, OY 2017, A47)
  • a demand Eurasian (“Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the Eurasian Patent Office on the basis of products resulting from PCT work and national work“, OY 2017, A77)
  • a demand Brazilian (“Pilot program & #8220; Patent Prosecution Highway & #8221; between the European Patent Office and the National Institute of Industrial Property of Brazil on the basis of products resulting from national work“, OY 2017, A96).

The parts to be produced are indicated in point C (& #8220;Patent Prosecution Highway pilot program between IP5 offices on the basis of PCT and national work products” , OY 2016, A106).

There is also a program of this type in US, CN, KR, JP, CA, SG, MX, AU and IL.

Chapter 3. Acceleration at different stages

Section 3.1. At the stage of entry into phase

3.1.1. Early entry

The EPO as a designated / elected office does not process an international application before the expiration of the period of 31 months from the filing date or, if priority has been claimed, from the priority date.

The requester may request the start of processing before the expiration of this period by filing an explicit request for early processing (& #8220;Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure” , OJ 2015, A94).

3.1.2. Anticipated processing of Euro-PCT demand

Normally, even in case of early phase entry before the deadline 31 months from priority, the EPO does not process the request unless the requester expressly requests it (& #8220;Notice from the European Patent Office dated 21 February 2013 concerning the request for advance processing” , OG 2013, 156 conform to theA23.2 PCT or A40.2 PCT).

If the express request for early entry is made prior to the publication of the international application, the applicant or the EPO must also request the IB to provide the documents of the application in accordance with theA20 PCT (A23.2 PCT or A40.2 PCT together R47.4 PCT).

No form is required for this request.

The applicant must then comply with the requirements for entry into phase (eg pay the filing fee, the additional fee if the request is more than 35 pages), produce a translation, specify the documents for the request and pay the filing fee. research) (& #8220;Notice from the European Patent Office dated 21 February 2013 concerning the request for advance processing” , OG 2013, 156).

Section 3.2. Immediately after entering the phase

3.2.1. Renunciation at the reception R161-R162 CBE

When entering phase, it is possible for the applicant to waive his right to receive the notification R161 EPC allowing him to make changes to his request ("Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure” , OJ 2015, A94).

To do this, he will need to have, when entering the phase (& #8220;Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure” , OJ 2015, A94):

  • filed amendments in response to the written opinion of ISA (or HIFIS or IPEA as appropriate);
  • paid the necessary claims fees.

3.2.2. Renunciation to the full six-month period of R161-162

When #8217; notification under R161 EPC and R162 EPC has been issued, the applicant is entitled to the full six-month period to file amendments.

If the applicant does not wish to use the full six-month period, he may request the immediate start of the search or examination.

It can, for example, be worded as follows: & #8220;The requester requests the immediate start of treatment and waives their right to use the remainder of the six month period referred to in  R161 EPC and R162 EPC” (“Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure” , OJ 2015, A94).

Section 3.3. At the research stage

3.3.1. For applications filed before July 1, 2014

1) Requests without priority

Applications not claiming priority and filed before July 1, 2014 are already in an expedited process: there is no point in applying for PACE.

L & #8217; EPO already makes the RREEs available under 6 months from the filing date (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 9)

2) Applications with priority (s)

It is possible to request to benefit from the PACE program for requests claiming a priority: a search will be carried out as soon as possible (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 9).

To perform an accelerated search, the & #8217; EPO must have (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 10):

  • the revendications,
  • the description,
  • the required translations,
  • the drawings (if any),
  • the sequence listing (if any).

3.3.2. For applications filed after July 1, 2014

There is nothing to do & #8230; normally the EPO treats them as if a PACE request was presented (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 8)

Section 3.4. At the confirmation stage of the exam

If the applicant submits the request for examination before having received the search report, he may renounce receiving the invitation from the R70 (2) EPC asking him to confirm the exam (ie filing a request for examination unconditionally, regardless of the search results) (& #8220;Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure” , OJ 2015, A94).

In this case, notification under l & #8217;A94 (3) EPC or R71 (3) EPC (Directives C-VI 3 and R62 (1) EPC) will be issued a few days after the transmission of the RRE (who will not have #8217; opinion as to patentability).

Section 3.5. At the examination stage

3.5.1. Principle

You can apply for PACE at any time (“Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 12), as soon as the Examining Division is competent.

In the event of payment by direct debit, the examination fee is levied upon receipt of the PACE request (& #8220;Regulations on the automatic debiting procedure” , OJ 3/2009, supplement, p19, point 6.1.b).

In the event of an accelerated procedure, the EPO does its utmost to issue the first notification under 3 months (the deadline expiring at the latest being retained, & #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 14):

  • from the receipt of the application, or
  • from the applicant's response under the R70bis EPC or R161 (1) EPC, or
  • from the PACE request.

The following notifications are issued within the same period of 3 months from the requester's response if (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 15):

  • the response is produced in a timely manner;
  • the reply addresses all the points raised in the previous notification.

3.5.2. Case of Euro-PCT applications

It is also possible to apply for the PACE program at any time.

If the applicant requests early entry (A23.2 PCT if & #8220; designated & #8221; or A40.2 PCT if & #8220; elected & #8221;), this does not mean that the PACE program is requested, it must be explicitly requested (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 item 13 and its footnote).

In the case of PCT applications entering the European phase for which the EPO has acted as ISA or SISA, accelerated examination can in principle be requested at any time, for example (& #8220;Notice from the European Patent Office dated 30 November 2015 concerning the European Patent Accelerated Processing Program ("PACE")” , OJ 2015, A93 point 13):

  • when entering the European phase before the EPO, or
  • together with the response to be given to the ISA's written opinion, the international preliminary examination report or the additional international search report in accordance with the R161 (1) EPC.

The other points remain the same.

Section 3.6. At the stage of deliverance

3.6.1. Principle

If the applicant approves the text without delay, the grant will follow without delay.

Of course, all taxes due will also have to be paid and translations of claims provided.

3.6.2. Renunciation to a second 71 (3)

If the applicant proposes changes in response to a R71 (3) EPC he can at the same time give up a next R71 (3) EPC ( 'Notice from the European Patent Office dated 8 June 2015 concerning the possibility of waiving the right to receive a new notification under Rule 71 (3) EPC", OJ 2015, A52 andNotice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure” , OJ 2015, A94).

Of course, if the applicant waives his right to receive a new R71 (3) EPChe must at the same time as this renunciation carry out all the acts necessary to give his agreement (see above: taxes, translation, etc.).

Section 3.7. At the opposition stage

3.7.1. Counterfeit action

If an infringement action has been brought before a national court, it is possible for a party to submit a request for accelerated processing (& #8220;Communiqué from the European Patent Office, dated March 17, 2008, relating to the accelerated processing of oppositions when an action for infringement has been initiated” , OG 2008, 221point 1).

This request can be filed at any time.

It must be in writing and be reasoned.

L & #8217; EPO then does its best to carry out the next pleading (the deadline expiring at the latest being retained) (& #8220;Communiqué from the European Patent Office, dated March 17, 2008, relating to the accelerated processing of oppositions when an action for infringement has been initiated” , OG 2008, 221, point 1):

  • in a delay of 3 months from the receipt of the request;
  • if the request has been made within the opposition period, within 3 months from the reception of the holder's response to the notice of opposition.

This acceleration will also be carried out if a competent court or administration notifies the & #8217; EPO that & #8217; an infringement action is pending (& #8220;Communiqué from the European Patent Office, dated March 17, 2008, relating to the accelerated processing of oppositions when an action for infringement has been initiated” , OG 2008, 221point 2).

The cooperation of the parties is essential (& #8220;Communiqué from the European Patent Office, dated March 17, 2008, relating to the accelerated processing of oppositions when an action for infringement has been initiated” , OG 2008, 221point 3).

3.7.2. Case of a straw man

We know that #8217; it is possible to file an opposition through a straw man.

In this situation, care should be taken because the acceleration of the procedure will be quite difficult to motivate because it is not possible to invoke grounds relating to the & #8220; true & #8221; opposing (T872 / 13).

3.7.3. Other cases

The EPO will also speed up the procedure if (Directives D-VII 1.2):

  • the duration of the examination procedure clearly exceeded the average duration;
  • the length of the opposition proceedings clearly exceeded the average length;
  • d & #8217; other cases (eg divisional) depend on the outcome of the opposition;
  • The next phase of the exam requires only a relatively short time.

Section 3.8. At the appeal stage

3.8.1. Principle

This acceleration is provided for by & #8220;Notice from the Vice-President responsible for General Management 3, dated March 17, 2008, relating to the acceleration of the procedure before the Boards of Appeal” , OG 2008, 220 (Directives E-VIII 5).

3.8.2. Who can require

Any party which has a legitimate interest has expedited the proceedings may request it, including the competent courts or departments of a Contracting State.

3.8.3. Request

The request must be addressed to the competent board of appeal at any time during the proceedings.

It must state the reasons for the emergency and cover the supporting documents.

3.8.4. Reasons for Emergency #8217;

The reasons must be related to the nature of the case. For example :

  • an action for infringement is instituted or contemplated;
  • the decision to subscribe to a license is subject to the outcome of the appeal;
  • l & #8217; opposition must be dealt with expeditiously;
  • because of the drawbacks produced by the suspensive effect of the appeal (exceptional);
  • etc.

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